AIR 2011 (NOC) 399 (BOM.) ::2011 (3) AIR Bom R 452 ::2011 CLC 795 (BOM)

Bombay High Court

Hon'ble Judge(s): Mohit S. Shah, C. J., S. J. Vazifdar , JJ

(A) Trade Marks Act, 1999 S. 56, 27, 29 — Passing off action — And action for infringement of trade mark — Maintainable even if defendant was only exporting goods having deceptively similar mark and not selling them in India {" It is admitted in the instant case that the appellant applies the impugned mark to the goods in India which are thereafter exported. The impugned mark has thus been applied to the appellant— s goods within the meaning of Section 56. Had the mark been applied in relation to goods to be sold within India, it would undoubtedly have constituted use of the trade mark in India. By virtue of Section 56, the application in India of the trade mark, although to goods to be exported from India, is deemed to constitute use of the trade mark in relation to the said goods ' œfor any purpose for which such use is material under the Trade Marks Act, 1999, or any other law' ‌. The plain language of Section 56, therefore, constitutes the application in India of trade mark even to goods to be exported from India as use of the trade mark in relation to those goods for any purpose for which such use is material under the Act or any other law. The use of a trade mark is relevant for more than one reason. It is relevant to a party seeking to establish goodwill and reputation in a mark in an action for passing off. It is also relevant, even if it is not necessary, to establish the act of infringement or passing off. Th....